[Federal Register Volume 89, Number 55 (Wednesday, March 20, 2024)]
[Notices]
[Pages 19817-19818]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-05798]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2023-0045]


Resources for Examining Means-Plus-Function and Step-Plus-
Function Claim Limitations

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) issued a 
memorandum to the patent examining corps to assist patent examiners in 
addressing means-plus-function and step-plus-function claim 
limitations, and to create a clearer record for the applicant, the 
public, and the courts. The issued memorandum will help ensure 
consistent analysis by USPTO employees in addressing means-plus-
function and step-plus-function limitations and will result in clearer 
communications to applicants from the USPTO as to the interpretation of 
means-plus-function and step-plus-function limitations and any related 
deficiencies. Clearer USPTO communications provide both the applicant 
and the public with notice as to the claim interpretation used by the 
patent examiner during prosecution, and if the applicant intends a 
different claim interpretation, the issue can be clarified early in 
prosecution.

DATES: Comment Deadline: Written comments must be received on or before 
June 18, 2024, to ensure consideration.

ADDRESSES: Comments must be submitted through the Federal eRulemaking 
Portal at www.regulations.gov. To submit comments via the portal, enter 
docket number PTO-P-2023-0045 on the homepage and select ``Search.'' 
The site will provide a search results page listing all documents 
associated with this docket. Find a reference to this document and 
select the ``Comment'' icon, complete the required fields, and enter or 
attach your comments. Attachments to electronic comments will be 
accepted in Adobe[supreg] portable document format (PDF) or Microsoft 
Word[supreg] format. Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included in 
the comments.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of comments 
is not feasible due to a lack of access to a computer and/or the 
internet, please contact the USPTO using the contact information below 
for special instructions.

FOR FURTHER INFORMATION CONTACT: Carolyn Kosowski, Senior Legal 
Advisor, Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patents, at [email protected] or 571-272-
7755; or Brannon Smith, Legal Advisor, Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patents, at 
[email protected] or 571-270-1601.

SUPPLEMENTARY INFORMATION: On March 18, 2024, the USPTO issued a 
memorandum to the patent examining corps titled ``Resources for 
Examining Means-Plus-Function and Step-Plus-Function Claim Limitations 
(35 U.S.C. 112(f))'' (memorandum). The memorandum is available at 
www.uspto.gov/patents/laws/examination-policy/memoranda-examining-corps.
    As background, means-plus-function limitations appear in many 
claims across a wide variety of technologies, while step-plus-function 
limitations appear less frequently. It is critical to proper 
examination that patent examiners appreciate the unique statutory 
construction of means-plus-function and step-plus-function limitations 
and make the record clear as to the same. It is also incumbent upon 
patent examiners to make the prosecution history record clear for 
applicants, the public, and the courts (and for the USPTO for any post-
grant determinations) when claims are examined under a means-plus-
function

[[Page 19818]]

or step-plus-function construction, as the invocation of 35 U.S.C. 
112(f) affects claim scope. Drafting claims with limitations that 
comply with 35 U.S.C. 112(f) can be beneficial to applicants by 
allowing them to recite a function in a claim and rely on the 
specification for the corresponding structure, material, or acts that 
perform the function and equivalents to the disclosed structure, 
material, or acts. This technique permits the claim drafter to avoid 
specific identification of the means or step for performing a claimed 
function in the claim itself by offering a shorthand that can point to 
a more robust description of the means or step in the specification.
    When a patent examiner determines that, under the broadest 
reasonable interpretation of a claim, a limitation invokes 35 U.S.C. 
112(f), the limitation must be limited to the structure, material, or 
acts described in the specification as performing the entire claimed 
function and equivalents to the disclosed structure, material, or acts. 
As a result, 35 U.S.C. 112(f) limitations will, in some cases, be 
afforded a narrower interpretation than a limitation that is not 
crafted in means-plus-function format. This is an important distinction 
when searching for and applying prior art. The memorandum highlights 
the special considerations for the examination of claims with 35 U.S.C. 
112(f) limitations.
    The memorandum also reminds patent examiners that the Manual of 
Patent Examining Procedure (MPEP) (9th Edition, Rev. 07.2022, February 
2023) includes the latest examination guidance concerning 35 U.S.C. 
112(f) in sections 2181-2187. The memorandum to patent examiners 
provides a summary of important points related to examining claims 
having 35 U.S.C. 112(f) limitations and provides the specific MPEP 
sections noted for more thorough information on each topic. The 
memorandum addresses: (1) the applicability of 35 U.S.C. 112(f); (2) 
claim interpretation and the importance of a clear record; and (3) 
adequate support, specifically to satisfy the requirements of 
definiteness, written description, and enablement.
    Additionally, the memorandum explains that refresher training on 35 
U.S.C. 112(f) is available to patent examiners. Training is also 
available to the public at www.uspto.gov/patents/laws/examination-policy/examination-guidance-and-training-materials.
    Feedback on 35 U.S.C. 112(f) guidance is welcome. Instructions for 
submitting feedback are provided in the ADDRESSES section of this 
notice.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-05798 Filed 3-19-24; 8:45 am]
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